Serving
on the conference project team, Iris Quadrio (Marval, O’Farrell & Mairal, Argentina)
and Urko Ochoa (Minino, Dominican Republic) contributed to the educational
program and will be moderating a number of the sessions during the conference.
The conference will be presented in English.

Moderated
by Ms. Quadrio, a session titled “Politics and IP – Navigating This Unlikely Pair,”
will feature Luiz Henrique O. do Amaral (Dannemann Siemsen, Brazil) and Prof.
Dr. Gustavo Juan Schötz (National Director of Copyright, Ministry of Justice
and Human Rights, Argentina). This session ties in closely with the theme of
the conference, as it touches upon the changes that are reshaping the political
landscape across Latin America, with Brazil transitioning towards presidential
elections in 2018 after a particularly difficult period, and Argentina and Peru
signaling important developments after their respective new administrations
took office.

Speakers
will delve into the changing political and economic landscape and
its impact on issues such as the negotiation of agreements as
they relate to intellectual property (IP) and trademarks, including the
relaunch of Mercosur/EU trade talks. This discussion will also cover the role
of the new trademark and IP authorities in Latin America, with their own list
of priorities and reform projects, bringing participants up to date on the most
recent changes and developments in the region.

Mr.
Ochoa will lead a panel of experts comprising Melissa Pérez de Patterson
(Procter & Gamble, Panama), Sergio Barragán (Pepsico, Mexico), and Rodrigo
Velasco (Alessandri Abogados, Chile) in a session concerning the balance
between IP rights and the increasing regulatory landscape. They will discuss a
numbers of issues raised as a consequence of the new regulatory regimes which
are expanding in the region, the corresponding restrictions for IP rights, and
how IP owners and practitioners are facing the new challenges. Participants should
expect to receive a clear regional overview of the matter, as well as the
conflicts arising from the overlap between IP and regulatory provisions (such
as packaging claims, use of characters, and other restrictions), and
expectations for future developments.

Following the conference, on October 4, INTA
will host a workshop, Free
Trade Zones: Commerce vs. Counterfeits, during
which brand owners, free trade zone authorities, government officials, and
other stakeholders will explore the ongoing threat of counterfeiting in free
trade zones.

The
International Trademark Association (INTA) has been increasing its engagement,
education, and outreach throughout Latin America in 2017. In May, the
Association officially opened a Representative Office in Santiago, Chile, and,
in July, announced the appointment of José Luis Londoño Fernández as its Chief
Representative Officer for the Latin America and Caribbean. Looking ahead, on
October 2–3, INTA will gather intellectual property (IP) experts and thought
leaders from across the region and around the world in Cartagena, Colombia, for
its Changing Landscape of Latin America
conference.

Conference
speakers and participants will explore the unique economic, social, and
political changes in the region and their impact on IP, and share advice on business engagement and investment
in the region. The sessions will be presented in English.

A key conference highlight will
be the opening keynote speaker: Francisco Samper,
Founder and President of MullenLowe SSP3 and Regional
Director, MullenLowe Latin America. Mr. Samper, a true innovator, will
discuss how advertising campaigns influenced the Colombian peace process, and
explain how his ad agency used its brand insight and advertising knowledge to
assist in the political movement for peace in Colombia. This inspiring presentation
will reveal ways for brand owners to depend their engagement in their
communities to help achieve common goals.

The educational program includes
sessions covering Latin America’s legislative and regulatory landscape and will
touch upon the increasing challenge of balancing IP rights with regulatory
restrictions affecting businesses. Panelists will also share ideas for best
practices for collaboration between IP counsel and entrepreneurs as they
balance the need to protect their IP with growing their businesses.

Another key topic of discussion
is data protection. Conference participants will gain insight into Latin
American data protection
laws so that they can (1) assist their clients in protecting themselves with the
proper procedures and (2) act nimbly and effectively when a data breach occurs.
Additional topics include IP enforcement and how to combat online
counterfeiting; opportunities and challenges
presented by social media; and how to protect and enhance their brand
conversation on the social media platforms.

Following the conference, on October 4, INTA will host a workshop, Free
Trade Zones: Commerce vs. Counterfeits, during
which brand owners, free trade zone authorities, government officials, and
other stakeholders will explore the ongoing threat of counterfeiting in free
trade zones.

On July 6th this year, the Hotel and Tourism Association of Colombia (Cotelco) issued a lawsuit of unconstitutionality against Articles 159 and 163 of the National Copyright Law (Law 23 of 1982). These Articles establish that any communication to the public requires prior authorisation from the right holders of the communicated musical works. Hotels are within the places considered by the law as those where this type of use happens. Therefore, it would be thought that any communication to the public going on in a hotel are subjected to pay royalties. Nonetheless, Article 83 of the General Law for Tourism (Law 300 of 1996) decrees that ‘rooms in hotel and accommodation establishments that are rented with housing purposes are assimilated to a private home’.

This fact could have caused a huge controversy regarding Copyright obligations. However, in 1997, the Constitutional Court examined the constitutionality of Article 83 of the Tourism Law. In doing so, the Corporation concluded (Judgement C-282 of 1997) that hotels must pay royalties when the musical works are communicated to the public ‘including the communication of sounds or musical videos through internal networks to the rooms.’ Furthermore, it was clarified that ‘it is different, when guests, in the intimacy of a hotel room, decided to listen to musical works using the electronic devices they take with them – such as a portable recorder or a Walkman-’. For the Court, something different to the described example would be unconstitutional. Thus, it confirmed that hotels must pay royalties when music is communicated to the public in ‘public’ and ‘private’ places, such as corridors and rooms. First, because otherwise, it will constitute a violation of intellectual property rights. Second, because it will also break the principle of equality, due to the creation of an exclusion in favour of hotels while other commercial establishments will have to pay royalties.

In a clear attempt to avoid their obligations regarding Copyrights, the hotel sector, through its Association Cotelco, filed the mentioned constitutional action. They argued that the Copyright Law violate Articles 1, 13, 15, 18, 21 and 28 of the Political Constitution of Colombia, which are related to the fundamental rights to privacy, freedom of conscience, dignity, freedom, and equality. It was claimed that the fact that the Copyright Law does not distinguish between ‘private’ and ‘public’ spaces in hotels is a violation of the Constitutional Law due to the consequent limitation of the personal autonomy of people staying in a hotel.

On July 31st, the Constitutional Court declared inadmissible Cotelco’s demand through the writ D-12233. In the document was expressed that the lawsuit did not meet the criteria for this kind of action. Moreover, it was reminded that the scope of the expression ‘hotel’ had previously been clarified in the Judgement C-282 of 1997. Nevertheless, it seems clear that the writ changes the content of the Judgment.

In addition to dismissing the lawsuit, in this opportunity, the Court initiates its argument stating that the Judgement C-282 affirmed that ‘the communication to the public of musical works is not public or private depending on the qualification of the place, but regarding the subject who carry out the action and the economic end – lucrative or of particular and private recreation - sought by this person’ (own translation). Following this, the exclusion of the obligation when guests reproduce musical works using their devices is repeated. And, on that basis, it is finally concluded that ‘it is clear that, for Copyright purposes, the Court has interpreted that the expression ‘hotels’ is not extended to the inside of the rooms when the guests reproduce musical works, either for mechanic processes, electronic, sonorous, or audio-visuals’ (own translation). In its conclusion, the Court omits clarification on the use of the guests ‘own’ devices. This omission is fundamental because as a result an entirely different idea has been expressed. It is not the same the use by guests of their own Walkman or iPod than their use of the hotel’s TV or radio. This difference is the aspect supporting the exception. Because, for the Court, in the first case the obligation to obtain authorisation before reproducing musical works falls on guests; while in the second case, such an obligation falls on the hotel.In this way, and apparently by mistake, the Constitutional Court issued the writ D-12233 in the opposite direction than the expressed in the Judgement C-282 of 1997.

It is worth mentioning that a writ cannot modify a judgement. And, therefore, that the Colombian constitutional jurisprudence has not been modified. However, it cannot be denied that this fact will be used by the hotel industry to try to avoid compliance with the payment of royalties. Thus, probably a new legal battle is coming.

Latin America case law on this matter has consistently affirmed that the communication to the public of musical works in hotel rooms is subject to the payment of royalties. For example, in Argentina and Brazil, this use is considered as an economic exploitation because it directly affects the price of rooms (the hotel rooms with radios and/or TVs are more expensive). In the same vein, Chilean case law has accepted that any communication to the public of musical works must pay royalties because hotels are commercial establishments. For its part, in Paraguay, any communication to the public of all kind of artistic works triggers the obligation to pay royalties. Like Colombia, case law in Peru and Uruguay have analysed the use of works in a ‘domestic environment.’ Courts in these countries have concluded that although the guests are accessing musical works in a private place, only house rooms are considered domestic environments. From there, the obligation to pay royalties when this use happens in hotel rooms.

The Peruvian denomination of origin (DO) 'Pisco' has been declared Cultural Heritage of the Peruvian Nation.

Law 30639 which was published yesterday in the Official Gazette of Peru, aims to elevate to the rank of law the Resolution Jefatural 179-88/INC-J. The Peruvian Congress therefore, has declared Pisco as Cultural Patrimony of the Nation.

Law 30639 only contains two articles: Art 1 which establishes the purpose of the Law, that is to raise the rank of Resolution 179-88 / INC-J; and Art 2 which covers the compliance with the declaration granting power to the Ministry of Culture, the Ministry of Foreign Trade and Tourism, the Ministry of Foreign Affairs and the Ministry of Production to monitor and comply with this law.

What is the Law of cultural heritage for?
The Peruvian Law for the Cultural Heritage of the Nation (Law No. 28296) in its Preliminary Title, Art 5 establishes that “…assets belonging to the Cultural Heritage of the Nation, regardless of their private or public status, are protected by the State”. Also Chapter II, Art 24 institutes that the protection of intangible property includes its “identification, documentation, registration, research, preservation, promotion, valorisation, transmission and revitalisation.”

Last month we reported that Peruvian Pisco was granted (by INDECOPI) the character of reputable mark due to its well-known status (here).

In regards to the status of cultural heritage, the newspaper notes a remark made by INDECOPI (which is the national IPO office) that “Peru is here (in Spanish)).
moving forward with its strategy of obtaining the original name of Pisco, taking into account that it currently shares it with Chile”. But is this relevant? How will anything change by obtaining the official status of ‘cultural heritage’? Pisco is original to Peru as it is original to Chile. Both of them has obtained DO in their respective jurisdiction. There are some states that recognise Pisco as coming from Chile and Peru. Other states will recognised as only coming from Chile and others only from Peru (see this report from La Republica

Moreover, this goes in line with something that we reported recently i.e. that Peruvian Pisco could not compete in the category of ‘Pisco’ but of the ‘aguardientes’ in the international contest "Spirits Selection by Concours Mondial de Bruxelles" (Brussels Competition), taken place next week in La Serena, Chile.

The Colombia Superintendence of Industry and Commerce (SIC) has issued an important understanding when drafting franchise contracts. While it was specifically addressed to trade marks it also extended to other intellectual property rights.

Basically, the understanding establishes that franchise contracts and “license agreement can only be concluded through the effective owner, that is, the person or company to which that entity authorises the registration of the mark.” In other words if there is no registered trade mark there is no right to be given by the franchisor. According to Prof Germán Darío Flórez (Colombia National University) the franchisor must be the owner of the trade mark in the territory in which the figure is to be exercised. He also extends to say that "when a contract is made between a franchisor and a franchisee, the trade mark is the main element that is transferred because it includes knowledge or 'know-how', and the secret in order for the business to thrive." While indeed the trade mark is the main element in a franchise to what extend can we say that the know-how is attached to the trade mark?

A trade mark is the sign that distinguishes one good or service from those of another company. Its function is the origin and we connect this with quality as well. A trade mark does not include the know-how. A company can authorise another one to use its trade mark or logo without imparting any knowledge but establishing quality standards. For example if I use the trade mark ‘banana’ for
mobile phones and I authorise another company to use ‘banana’ for mobile charges, there is no need to disclose the know-how of the company – let alone any trade secret. Yet going back to the case of franchise contracts, the franchisor owns the overall rights and trade marks of the company and allows its franchisee to use these rights and trade marks to do business.

Recently in a training session I was asked what the best way to draft an IP licence agreement is - there is not straightforward answer. But there are crucial things to consider depending on the IP wanted to be shared. In a franchise the franchisee not only would like to use the trade mark but actually the know-how of the company…that is the point. Therefore in such type of contract different clauses are included: use of trade marks (limitations), know-how, trade dress and the like; each one is independent of the others. Moreover, a franchisor may have other know-how and trade secrets that in this particular contract do not want to disclose.

Franchise| Colombia - Juan Valdez Cafe

missing London

The standard noted by SIC also includes “inventions, models, processes, image and constant advice, among other aspects protected by intellectual property and industrial secrecy.” This understanding goes in line with national IPO offices in Latin America. For example in Brazil INPI neither annotates agreements nor issue certificate of registration for the license of non-patented proprietary technological knowledge. In Mexico IP license/assignment must be registered with the IMPI and will not register if the IP registration had expired or if the agreement is longer than its IP valid term.

In Colombia there is no legislation on franchising and thus according to Prof Flórez “companies have made contracts in this modality without being the owners of the trade mark".

Economic and trade relations between Chile and Uruguay are currently governed by the Economic Complementation Agreement between Chile and the Southern Common Market (MERCOSUR) which comprises also Argentina, Brazil, and Paraguay. In order to deepen and stimulate trade relations, both countries agreed to start negotiations in early 2016 to set up a Free Trade Agreement.

This project has now reached the Chilean Chamber of Deputies for its First Constitutional Process.
This Agreement in general will coexist with the international agreements in which both countries are parties. Therefore in regards to Intellectual Property they reaffirm the commitment of both parties to the Berne Convention, Paris Convention, the TRIPS agreement and to its amendment protocol contained in the Doha Declaration (re. access to generic medicines).

If you are looking at the agreement, see chapter 10 (at page 183) which is the one that covers IP.Article 10.5 covers ‘principles’ which refers to a balanced treatment between the rights of innovators on their creations and the social component of the use of knowledge for the benefit of citizens – provided they are compatible with the IPRs provisions. In this we observed that Article 10.5bis refers to the commitment to public health acknowledging the Implementation of paragraph 6 of the Doha Declaration on the TRIPS Agreement and public health WT/L/540; and furthermore, the commitment to support the agreement presented by WT/L/641: inserting Article 31bis after Article 31 and by inserting the Annex to the TRIPS Agreement after Article 73.

Article 10.11 covers ‘denominations of origin and geographical indications’. In this, it asserts that each party must ensure in its legal system the protection of DOs and GIs and this to be in line with the TRIPS. The agreement further contains an Annex, if you look at Annex 10.11 it only covers Pisco and it contains this disclaimer “The foregoing shall be understood without prejudice to the recognition that Uruguay may grant to a country which is not a party in relation to homonymous geographical indications and denominations of origin.” According to MENSAJE Nº 348-364/ Pisco then has automatically secured access to the Uruguayan market without any geographical identifier.

Annex 10.7 has a list of DOs and GIs from both parties. From Uruguay is is mainly wines while Chile shows others such as ‘Limón de Pica’, ‘Sandía de Paine’, ‘Aceituna de Azapa’, ‘Dulces de la Ligua’, ‘Oregano de Putre’, and ‘Cordero Chilote’ to name a few.

From various jurisdictions we received some Geographical Indication news:

Mexico: The Mexican Industrial Property Institute (IMPI) informed that under International Register No. 1062, published in the Bulletin ‘Appellations of Origin’ No. 45, the WIPO has granted international protection for the Mexican ‘Cacao Grijalva.’ This cacao has been protected as denomination of origin in Mexico since August 2016.

For its part, the diary El Economista reported that the National Association of Designations of Origin (ANDO) of Mexico is seeking legal protection for the red octopus ‘Pulpo Maya,’ as well as international recognition for the appellation of origin ‘Arroz Morelos.’

Chile: Lst Friday was inaugurated the ‘First Festival of the Longaniza’ in Chillán, Chile. According to the Regional Diary EDÑUBLE, this is one of many actions developed in the search for an appellation of origin to present this product to the world. Before the festival, local producers of 'longaniza' participated in a talk on geographical indications, featuring speakers from the INAPI. As reported by this news agency, at this stage, 20 local producers of longaniza have received the first general outlines to obtain the geographical indication ‘longaniza de Chillán.’

Collective marks, certification marks and 3-D shape trade marks require specific requirements in Brazil. Additional documentation is needed for these type of marks and thus, the application process and its examination takes time and expertise.

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As it is expected these applications have a long process – adding to the backlog that the INPI already has. Yet, the INPI acknowledges that since 2013, it has been adopting administrative measures to remedy this. It now affirms that applicants may expect to receive the first review in about six months.

The data released by INPI shows that approx. 900 applications for collective marks per year are received; 300 for certification marks and; 160 3-D. However, it admits that in cases of collective and certifications marks 90% of applications are wrongly classified or do not submit certain and crucial documentation. In regards to 3-D marks it notes that applicants need to submit images of all views of that object which needs to have a ‘specific format’ be ‘unique and different from the competition’ and more importantly, the shape cannot be dictated by a technical utility (technical function). It also elaborates that a 2-D draw of a mark ‘with shadow or volume effect does not configure a three-dimensional mark.’

Finally it informs that there are currently 476 3-D marks, 273 collective marks and 68 certification marks registered.